[Federal Register Volume 64, Number 118 (Monday, June 21, 1999)]
[Notices]
[Pages 33056-33066]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-15696]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 980326078-9120-02]
Internet Usage Policy
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The Patent and Trademark Office (PTO) is publishing the final
Internet usage policy to provide guidance to PTO employees regarding
the use of the Internet for official PTO business. The policy covers
communications with applicants via Internet electronic mail (e-mail),
and using the Internet to search for information concerning patent
applications and elements appearing in trademark applications.
Guidelines for citing electronic information are provided in the
attachment.
DATES: The Internet usage policy is effective June 21, 1999.
FOR FURTHER INFORMATION CONTACT: Magdalen Greenlief, by mail to her
attention addressed to Box Comments--Patents, Assistant Commissioner
for Patents, Washington, D.C. 20231; by telephone at (703) 305-8813; by
facsimile transmission to (703) 305-8825; or by electronic mail through
the Internet to ``[email protected]''.
SUPPLEMENTARY INFORMATION: The PTO published a ``Request for Comments
on Proposed Internet Usage Policy'' in the Federal Register on October
26, 1998 (63 FR 57101) and in the Official Gazette of the Patent and
Trademark Office on November 17, 1998 (1216 OG 74). The proposed policy
is being adopted without change. The attached guidelines for citing
electronic information have been revised.
Discussion of Public Comments
Sixteen comments were received by the PTO in response to the
request for comments. All comments have been fully considered. The
comments generally support (1) the use of Internet e-mail for
communications between applicant and the PTO, and (2) the use of the
Internet to perform searches provided the confidentiality of pending
patent applications is not compromised.
[[Page 33057]]
Comments concerning the patent provisions are addressed separately from
the comments concerning the trademark provisions.
(A) Comments Concerning the Patent Provisions
Comment 1: One comment stated that Internet e-mail will have a very
limited use in view of the fact that proposed Patent Article 5 limits
the use of the Internet e-mail for communications that do not require a
signature. It was suggested that the PTO establish an Extranet at its
earliest convenience to which signed documents can be sent.
Response: The PTO will take the suggestion of establishing an
``Extranet'' under advisement. The PTO is actively planning other
options such as digital signatures, digital certificates, encryption
and public key/private key encryption.
Comment 2: One comment suggested that there should be no
limitations as to the types of correspondence that may be communicated
via Internet e-mail and that e-mail with message encryption with
verifiable digital signatures should have the same weight as
communications in paper or facsimile.
Response: The PTO is limiting the use of Internet e-mail to
communications other than those under 35 U.S.C. 132 (responses to a
notice of rejection) or which otherwise require a signature. The PTO is
considering how to best handle electronic signatures and how to
internally process e-mailed responses to a notice of rejection. Based
on the experience gathered with the limited use of e-mail, and after
further study and development, the PTO hopes in the future to accept
the electronic filing of communications under 35 U.S.C. 132 and
communications which otherwise require a signature.
Comment 3: One comment suggested that the use of e-mail should be
expanded and urged the PTO to ensure that e-mail sent to it can be
securely transmitted and reliably stored. An example of such expanded
use would be the sending of draft claims to a patent examiner prior to
a telephonic/personal interview.
Response: Communications via Internet e-mail are at the discretion
of the applicant. If applicant wishes to communicate with the PTO on an
unsecure medium, applicant is doing so at his/her own risk. Article 5
of the Patent Internet Usage Policy does not prohibit applicant from
using the Internet e-mail to transmit draft claims to a patent examiner
prior to a telephonic/personal interview. If applicant chooses to
transmit a copy of the draft claims via Internet e-mail to the patent
examiner prior to a telephonic/personal interview, applicant may do so.
However, since the correspondence would contain information subject to
the confidentiality requirement as set forth in 35 U.S.C. 122, the
patent examiner will not respond to applicant's communication via
Internet e-mail unless there is a written authorization by applicant in
the application file record. The patent examiner may respond by
telephone, or other appropriate means. A printed copy of the Internet
e-mail communication will be made of record in the application file.
Comment 4: One comment suggested that some simple or routine
correspondence of a non-confidential nature (e.g., interview scheduling
requests, inquiries as to whether a document has been received by the
examiner, inquiries as to an examiner's fax number, etc.) should be
permitted without requiring an advance authorization form even though a
serial number of a patent application may be included in the e-mail
communications.
Response: A written authorization from applicant is required only
where applicant's Internet e-mail correspondence to the PTO contains
information subject to the confidentiality requirement of 35 U.S.C. 122
and applicant wishes the PTO to respond via Internet e-mail to
applicant's correspondence. If applicant's e-mail correspondence to the
patent examiner contains information subject to the confidentiality
requirement of 35 U.S.C. 122 and there is no written authorization by
applicant in the application file, the patent examiner may respond to
applicant's e-mail correspondence by telephone, or other appropriate
means (see Patent Internet Usage Policy Article 7).
Comment 5: One comment indicated that it would not be necessary for
the PTO to confirm receipt of an e-mail communication from a sender
since the sender can require a receipt from his/her e-mail system for
any message sent. Several comments indicated that it would be desirable
to receive an acknowledgment from the PTO of receipt of e-mail
communications with attachments from applicant. One comment suggested a
bounce-back acknowledgment with an attachment such that the sender can
verify that the confirmation matches the transmission. Another comment
suggested an automatic confirmation that a message was received by the
PTO with a later confirmation that the file attachments are received
and readable.
Response: The PTO will adopt work steps, develop in-house
guidelines, and work with the Office of the Chief Information Officer
in an effort to ensure that the acknowledgment of an e-mail
communication together with a copy of an attachment containing the
original transmission is sent back to the applicant upon receipt in the
Office.
Comment 6: Several comments indicated that they do not foresee any
problem with the deletion of the requirement for an express waiver of
35 U.S.C. 122 by the applicant before Internet e-mail may be used by
PTO employees to reply to the applicant's e-mail correspondence where
sensitive data will be exchanged or where there exists a possibility
that sensitive data could be identified. The comments indicated that
the requirement for a written authorization is preferable. One comment
suggested that the authorization form should not include a statement
that Internet communications are not secure.
Response: The authorization form set forth in Article 5 of the
Patent Internet Usage Policy is a sample form suggested by the PTO that
applicants may use to give the PTO written authorization to communicate
with applicants via Internet e-mail. The PTO recommends that applicants
use the suggested language. However, if applicants prefer to use their
own authorization form, applicants may do so provided it is clear that
applicants are giving the PTO written authorization to use Internet e-
mail to respond to applicants' e-mail correspondence.
Comment 7: Several comments indicated that other appropriate means
such as fax or telephone would be acceptable to respond to applicant's
e-mail correspondence. One comment stated that the use of other means
would not be acceptable where applicant requests the PTO to respond via
e-mail.
Response: Article 7 of the Patent Internet Usage Policy requires
all e-mail correspondence from applicant to be responded to by PTO
personnel. Furthermore, Article 7 permits PTO personnel to respond to
applicant's Internet e-mail correspondence by other appropriate means
such as telephone, or by facsimile transmission. The use of the
telephone or facsimile transmission to respond to applicant's e-mail
correspondence appears to be just as effective as the use of Internet
e-mail. The suggestion to require the PTO to use only Internet e-mail
to respond to applicant's e-mail correspondence upon applicant's
request has not been adopted since such a requirement would be
unreasonable. PTO personnel should have the discretion to decide
[[Page 33058]]
what appropriate means he/she should use to respond to applicant's e-
mail correspondence.
Comment 8: Several comments indicated that interviews are more
effective when conducted in person or by telephone rather than by e-
mail. The comments suggested that e-mail would be very useful to
transmit proposed claims, or amendments to the patent examiner prior to
an interview.
Response: Communications via Internet e-mail are at the discretion
of applicants. Applicants may use Internet e-mail to transmit proposed
claims, and/or proposed amendments to the patent examiner prior to an
interview. Since applicants' e-mail correspondence would contain
information subject to the confidentiality requirement of 35 U.S.C.
122, the patent examiner will not be able to respond to applicants' e-
mail correspondence via Internet e-mail unless a written authorization
from applicant is in the application file record.
Comment 9: One comment indicated that despite the lack of
encryption, he would use e-mail almost exclusively if it were
authorized since most matters are not of such confidential nature that
security is an issue. Another comment indicated that without encryption
and digital signature, use of Internet e-mail would be limited to non-
substantive issues and non-confidential subject matter. Another comment
indicated that Internet e-mail would be a convenient way to request,
set up and confirm regular telephone interviews.
Response: The PTO is considering options such as encryption and
digital signature to improve security of e-mail.
Comment 10: Several comments favor the use of digital signatures,
digital certificates and encryption to improve security of e-mail. The
different kinds of software recommended are public/private key
encryption program PGP(), Verisign TM, and S/
MIME with digital certification. One comment suggested that the users
be given an opportunity to comment on the alternatives considered by
the PTO.
Response: The PTO is planning to use PKI technology to provide
digital certificates and directory services to support both internal
and external e-mail users.
Comment 11: Several comments favor the use of the Internet for
searching and retrieving scientific and technical information in patent
applications provided that the PTO ensures that the searches are
conducted in a manner that does not compromise the confidentiality of
patent applications.
Response: Because security issues concerning transmission and
capture of search requests by unauthorized individuals have not yet
been resolved, patent examiners are instructed to exercise good
judgment and restrict their searches to non-specific patent application
uses so as to ensure that the confidentiality of patent applications is
not compromised. Patent Internet Usage Policy, Article 9, states that
Internet search activities that could disclose proprietary information
directed to a specific application, other than a reissue application or
reexamination proceeding, are not permitted.
(B) Comments Concerning the Trademark Provisions
Comment 1: One comment indicated that a reply to an e-mail
communication from the PTO which contained the original transmission
would be desirable in order that the sender could verify that the
content of the transmission received by the PTO matches the original
transmission.
Response: The PTO will adopt work steps, develop in-house
guidelines, and work with the Office of the Chief Information Officer
in an effort to ensure that the acknowledgment of an e-mail response
together with a copy of an attachment containing the original
transmission is sent back to the applicant or applicant's attorney upon
receipt in the PTO.
Comment 2: A concern was raised regarding the accuracy of the
record with regard to the telephonic correspondence between the
examining attorney and the applicant. It was suggested that the PTO
employ a form of audio capture in order to store telephone
conversations and that these electronic files could be made a part of
the record.
Response: The intent of Article 10 was to allow the attorney in the
PTO to respond to the communication in the most efficient and
appropriate method depending upon the circumstances of the particular
situation. Accuracy of the notes to the file regarding telephone
conversations have not posed a problem in the past and the PTO is not
planning to implement audio capture techniques in order to make
recordings of telephone conversations a part of the official record.
Comment 3: One comment maintained that examiner's amendment that is
issued electronically should only be done so after agreement on the
issues have been reached between the examiner and the applicant or his/
her attorney. Further, a hard copy of the amendment should be placed in
the file.
Response: This is the current policy in the PTO. Examiner's
amendments are only issued after agreement has been reached between the
examining attorney and the applicant or his/her attorney. This policy
will not change. As indicated in the policy statement, all Internet e-
mail communications between the examining attorney and the applicant or
his/her representative are to be printed as hard copy and inserted into
the paper file. An examiner's amendment would be no exception to this
policy. (See Trademark Internet Usage Policy, Article 8.)
Comment 4: One comment suggested that all actions issued by the PTO
requiring a timely response by the applicant should always be mailed
through the U.S. mail system, including those that were communicated to
the applicant by e-mail.
Response: Sending an Office action by regular mail as well as by e-
mail defeats a significant purpose that would be achieved by the use of
e-mail. The use of e-mail to communicate with applicants is fast and
eliminates the physical transfer of unnecessary paper. As many
applicants and applicants' representatives do today with regular mail,
procedures to record receipt of e-mail should be put in place. In this
way, an applicant or his/her representative may use these established
procedures to establish non-receipt of an e-mail Office action if the
application is later abandoned for failure to respond to the Office
action. Justification for revival of an application based on
documentation of non-receipt of an Office action would be the same for
e-mailed Office actions as it is today for Office actions mailed in
regular mail. Therefore, it is unnecessary to send a hard copy of the
e-mailed Office action through the regular mail. (See also TMEP Section
702.04(e)--Procedure for Filing by Fax)
Comment 5: One Comment suggested that e-mail responses from
applicants that require verification through declaration or affidavit
be required to provide an electronically reproduced signature or, if
such signature cannot adequately be sent via the Internet, that such
documents be sent by fax, regular mail or private package delivery.
Response: It would be quite acceptable for a signed declaration or
affidavit to be received by e-mail in the PTO by means of a software
package that allowed for viewing of the actual signed document. The PTO
currently accepts original applications through its Trademark
Electronic Application System (TEAS) with an electronic signature,
i.e., any combination of alpha/numeric characters that has been
specifically adopted to serve the function of the signature, preceded
and followed by the forward slash (/). Similarly, an electronic
signature
[[Page 33059]]
selected by the applicant would validate an affidavit or declaration
submitted by e-mail in the course of examination of the application.
Such an affidavit or declaration would be submitted as the body of or
word processing attachment to the applicant's e-mail response.
Comment 6: One comment suggested advising applicants not to send
confirming or follow-up hard paper copies of responses which are sent
by e-mail. It was observed that such additional submissions could
adversely delay prosecuting the trademark application.
Response: The PTO agrees with this suggestion and advises
applicants to refrain from sending such ``confirmation'' copies of e-
mail correspondence. This recommendation has also been announced
concerning submissions by facsimile in which confirmation copies of
faxed correspondence are discouraged. (See TMEP Section 702.04(e)--
Procedure for Filing by Fax)
Comment 7: One comment questioned whether an additional form of
communication with the PTO would result in increased administrative
costs for the PTO and for customers of the PTO.
Response: The PTO would incur no additional costs in the
administration of Internet communications. The PTO would utilize the
systems and personnel already in place to process these communications.
With regard to costs for customers of the PTO, non-participating
customers would incur no indirect costs because the PTO has no need to
raise fees to administer this system. Participating customers may or
may not incur additional costs depending on their circumstances, but
since this form of communication is purely at the option of the
customer, the customer alone will decide whether the benefits of
Internet communications justify any additional expense. Use of Internet
e-mail is purely at the option of the applicant.
Comment 8: One comment indicated that foreseeable problems exist in
that e-mail communications are more likely to contain errors than other
submissions to the PTO, and that the users of this form of
communication should bear a higher burden of proof and additional fees
for correcting errors in e-mail communications.
Response: There is no basis for the PTO to presume that e-mail
submissions are more likely to contain errors than other forms of
communications. The PTO expects that applicants and their
representatives would exhibit the same attention to the accuracy of
their e-mail submissions as they would to submissions made using any
other means. Furthermore, the PTO will not penalize customers who wish
to use e-mail. Utilization of Internet communications will help the PTO
become more technologically advanced and efficient. Additional burdens
and fees for those cooperating with these efforts would be
counterproductive; therefore, this suggestion will not be adopted.
Comment 9: One comment suggested that the PTO study, publish and
request Comments on the e-TEAS electronic application system for the
filing of trademark and service mark applications over the Internet.
Response: On November 1, 1997, the PTO began a pilot program
accepting trademark and service mark applications over the Internet.
Due to the success of the pilot, on October 1, 1998, the PTO opened
this system, now known as e-TEAS, to the public. This system does not
utilize e-mail communications, but instead requires that a particular
form be completed on-line and submitted directly to a dedicated server.
While the e-mail communications contemplated by the present policy are
related to e-TEAS in that both involve communications over the
Internet, the form and substance of these communications are quite
different and often not comparable. On May 11, 1999, the PTO published
a notice of proposed rulemaking and notice of hearing regarding the
Trademark Law Treaty Implementation Act Changes. 64 Fed. Reg. 25223. In
this notice, the PTO proposed formal rules to govern the electronic
filing of trademark and service mark applications. The notice invites
Comments from the public.
Comment 10: One comment indicated that confusion would occur
concerning whether e-mail communications are informal communications or
formal actions by the PTO or responses to actions, and that Trademark
Articles 4 and 11 should better articulate how they should be
differentiated. The comment suggested that formal e-mail communications
be made of record in the application file and maintained in an
electronic log. The Comment also questioned the PTO's procedures for
maintaining paper and electronic copies of Internet e-mail
correspondence and suggested greater specificity in creating procedures
for this purpose.
Response: Trademark Articles 4 and 11 indicate that Internet e-mail
may be used for formal communications, such as Office actions or
responses to Office actions, or informal communications, such as
communications similar to telephone or personal interviews. Trademark
Articles 4, 8 and 11 indicate that all such communications, whether
formal or informal, must be printed and placed in the application file
and become a part of the formal record. All electronic communications
received by the PTO will, at a minimum, be maintained on a schedule
that is consistent with the PTO's current archival policies for paper
records. Furthermore, while no schedule currently exists for the
maintenance of e-mail correspondence, retention schedules are currently
being developed for electronic records and will be in place in the near
future. The PTO will develop guidelines for its employees to ensure
that communications emanating from the PTO are clear as to whether a
response is required as is done in all written communications.
Similarly, the PTO will develop guidelines for determining whether a
communication received from an applicant should be interpreted as
responsive to an Office communication. Furthermore, while it will be
incumbent upon the recipient to initially determine whether a
communication is informal or not, the PTO's records will be complete
and misunderstandings can be rectified in accordance with the remedies
outlined in Trademark Article 9 regarding petitions to the
Commissioner. If the applicant does not wish for informal
communications to be placed in the application file, the option of
telephone or personal interviews are still available. The PTO will not
require an applicant to use Internet e-mail for any communications
under any circumstances.
Comment 11: One comment indicated that the Internet should not be
considered by the PTO as a proper source for information leading to
refusals of trademark and service mark applications unless the
examining attorney can show that the reference is publicly available in
stable form from the date of its first publication.
Response: The Internet contains a great wealth of information of
varying reliability and transience. Nevertheless, this information does
exist and may be valuable in determining the registrability of a mark.
The Trademark Trial and Appeal Board has considered the admissibility
of Internet evidence in the context of an inter partes proceeding, and
held that it is admissible and that the reliability of the information
would be directed to the weight or probative value to be given to the
evidence. Raccioppi v. Apogee Inc., 47 USPQ 1368 (TTAB 1998). The PTO
would be remiss in not utilizing this accepted, economical and
efficient resource to gather some of the
[[Page 33060]]
information required to make proper judgments concerning the
registrability of marks. In fact, a separate comment commended the PTO
for utilizing the Internet as a research tool because of the potential
cost savings of using this free and readily available source of
information. The PTO will develop additional guidelines to ensure that
examining attorneys provide applicants with adequate information to
locate the document retrieved, in accordance with Trademark Article 12.
I. Patent Internet Usage Policy
Introduction
The Internet and its offspring, the World Wide Web (WWW), offer the
PTO opportunities to (1) enhance operations by enabling Patent
Examiners to locate and retrieve new sources of scientific and
technical information, (2) communicate more effectively with our
customers via advanced electronic mail (e-mail) and file transfer
functions, and (3) more easily publish information of interest to the
intellectual property community and the general public. This new
technology offers low-cost, high speed, and direct communications
capabilities upon which the PTO wishes to capitalize.
The organizations reporting to the Assistant Commissioner for
Patents have special legal requirements that must be satisfied as part
of the PTO's goal to make effective use of the Internet. Because
security issues concerning transmission and capture of search requests
by unauthorized individuals have not yet been resolved, Patent
Examiners are to exercise good judgment and restrict their searches to
nonspecific patent application uses.
Purpose
To establish a policy for use of the Internet by the Patent
Examining Corps and other organizations within the PTO;
To address use of the Internet to conduct interview-like
communications and other forms of formal and informal communications;
To publish guidelines for locating, retrieving, citing, and
properly documenting scientific and technical information sources on
the Internet;
To inform the public how the PTO intends to use the Internet; and
To establish a flexible Internet policy framework which can be
modified, enhanced, and corrected as the PTO, the public, and customers
learn to use, and subsequently integrate, new and emerging Internet
technology into existing business infrastructures and everyday
activities to improve the patent application, the examining, and
granting functions.
Article 1. Applicability
This policy applies to members of the Patent Organization within
the PTO, including contractors and consultants working with, or
conducting activities in support of, the Patent Organization.
Article 2. Scope
This policy applies to activities associated with, or directly
related to, use of the Internet via PTO-provided network connections,
facilities, and services. This includes, but is not limited to, PTONet
connections, Office of Chief Information Officer (OCIO)-provided PCs
and workstations, and Internet provider services. This policy also
applies to use of other non-PTO Internet access facilities and
equipment that are used to conduct non-patent application specific
work.
Article 3. Conformance With Existing, PTO-Wide, Internet Use Policy
This Internet Usage Policy supersedes the Interim Internet Usage
Policy published in the Official Gazette on February 1997. The policy
outlined in this document augments the existing PTO Internet Acceptable
Use Policy as set forth in the Office Automation Services Guide. As
such, this policy is an extension of current PTO office-wide Internet
policy.
Article 4. Confidentiality of Proprietary Information
If security and confidentiality cannot be attained for a specific
use, transaction, or activity, then that specific use, transaction, or
activity shall NOT be undertaken/conducted.
All use of the Internet by Patent Organization employees,
contractors, and consultants shall be conducted in a manner that
ensures compliance with confidentiality requirements in statutes,
including 35 U.S.C. 122, and regulations. Where a written authorization
is given by the applicant for the PTO to communicate with the applicant
via Internet e-mail, communications via Internet e-mail may be used.
Backup, archiving, and recovery of information sent or received via
the Internet is the responsibility of individual users. The OCIO does
not, and will not, as a normal practice, provide backup and recovery
services for information produced, retrieved, stored, or transmitted
to/from the Internet.
Article 5. Communications via the Internet and Authorization
Communications via Internet e-mail are at the discretion of the
applicant.
Without a written authorization by applicant in place, the PTO will
not respond via Internet e-mail to any Internet correspondence which
contains information subject to the confidentiality requirement as set
forth in 35 U.S.C. 122. A paper copy of such correspondence will be
placed in the appropriate patent application.
The following is a sample authorization form which may be used by
applicant:
``Recognizing that Internet communications are not secure, I hereby
authorize the PTO to communicate with me concerning any subject matter
of this application by electronic mail. I understand that a copy of
these communications will be made of record in the application file.''
A written authorization may be withdrawn by filing a signed paper
clearly identifying the original authorization. The following is a
sample form which may be used by applicant to withdraw the
authorization:
``The authorization given on______, to the PTO to communicate with
me via the Internet is hereby withdrawn. I understand that the
withdrawal is effective when approved rather than when received.''
Where a written authorization is given by the applicant,
communications via Internet e-mail, other than those under 35 U.S.C.
132 or which otherwise require a signature, may be used. In such case,
a printed copy of the Internet e-mail communications MUST be given a
paper number, entered into the Patent Application Location and
Monitoring System (PALM) and entered in the patent application file. A
reply to an Office action may NOT be communicated by applicant to the
PTO via Internet e-mail. If such a reply is submitted by applicant via
Internet e-mail, a paper copy will be placed in the appropriate patent
application file with an indication that the reply is NOT ENTERED.
PTO employees are NOT permitted to initiate communications with
applicant via Internet e-mail unless there is a written authorization
of record in the patent application by the applicant.
All reissue applications are open to public inspection under 37 CFR
1.11(a) and all papers relating to a reexamination proceeding which
have been entered of record in the patent or reexamination file are
open to public inspection under 37 CFR 1.11(d). PTO employees are NOT
permitted to initiate communications with applicant in a reissue
application or a patentee of a reexamination proceeding via Internet e-
mail unless written authorization is given by the applicant or
patentee.
[[Page 33061]]
Article 6. Authentication of Sender by a Patent Organization Recipient
The misrepresentation of a sender's identity (i.e., spoofing) is a
known risk when using electronic communications. Therefore, Patent
Organization users have an obligation to be aware of this risk and
conduct their Internet activities in compliance with established
procedures.
Internet e-mail must be initiated by a registered practitioner, or
an applicant in a pro se application, and sufficient information must
be provided to show representative capacity in compliance with 37 CFR
1.34. Examples of such information include the attorney registration
number, attorney docket number, and patent application number.
Article 7. Use of Electronic Mail Services
Once e-mail correspondence has been received from the applicant, as
set forth in Patent Article 4, such correspondence must be responded to
appropriately. The Patent Examiner may respond to an applicant's e-mail
correspondence by telephone, fax, or other appropriate means.
Article 8. Interviews
Internet e-mail shall NOT be used to conduct an exchange or
communications similar to those exchanged during telephone or personal
interviews unless a written authorization has been given under Patent
Article 5 to use Internet e-mail. In such cases, a paper copy of the
Internet e-mail contents MUST be made and placed in the patent
application file as required by the Federal Records Act in the same
manner as an Examiner Interview Summary Form is entered.
Article 9. Internet Searching
The ultimate responsibility for formulating individual search
strategies lies with individual Patent Examiners, Scientific and
Technical Information Center (STIC) staff, and anyone charged with
protecting proprietary application data. When the Internet is used to
search, browse, or retrieve information relating to a patent
application, other than a reissue application or reexamination
proceeding, Patent Organization users MUST restrict search queries to
the general state of the art. Internet search, browse, or retrieval
activities that could disclose proprietary information directed to a
specific application, other than a reissue application or reexamination
proceeding, are NOT permitted.
This policy also applies to use of the Internet as a communications
medium for connecting to commercial database providers.
Article 10. Documenting Search Strategies
All Patent Organization users of the Internet for patent
application searches shall document their search strategies in
accordance with established practices and procedures as set forth in
MPEP 719.05 subsection I.(F).
Article 11. Citations
All Patent Organization users of the Internet for patent
application searches shall record their fields of search and search
results in accordance with established practices and procedures as set
forth in MPEP 719.05 subsection I.(F).
Subparagraph A
Internet document citations should include information which is
normally included for reference documents (i.e., Form PTO-892). In
addition, any information which would aid a future searcher in locating
the document should be included in the citation. Guidelines for citing
electronic information can be found as an attachment to this policy.
Subparagraph B
When a document found on the Internet is not the original
publication, then the Patent Examiner or STIC staff shall pursue the
acquisition of a copy of the originally published document or an
original of the document or Web object in question for all references
cited. Note: scanned images are considered to be a copy of the original
publication. Electronic-only documents are original publications.
Article 12. Professional Development
The Internet is recognized as a tool for professional development.
It may be useful for keeping informed of technological and legal
developments in all art areas. For example, use of the Internet for
keeping abreast of conferences, seminars, and for receiving mail from
appropriate list servers is acceptable. This is consistent with the
Department of Commerce's Internet Usage Policy.
Article 13. Policy Guidance and Clarifications
Within the Patent Organization, any questions regarding Internet
usage policy should be directed to the user's immediate supervisor.
Non-PTO personnel should direct their questions to the Office of the
Deputy Assistant Commissioner for Patent Policy and Projects.
II. Trademark Internet Usage Policy
Introduction
The Internet and its offspring, the World Wide Web (WWW), offer the
PTO opportunities to (1) enhance customer services by enabling attorney
advisors (Trademarks) and other Trademark employees to locate and
retrieve new sources of legal, scientific, commercial and technical
information, (2) communicate more effectively with customers via
electronic mail (e-mail) and file transfer functions, and (3) more
easily publish information of interest to the intellectual property
community and the general public.
This new technology offers low-cost, high speed, direct
communication capabilities that the PTO wishes to leverage to the
advantage of its customers.
The organizations reporting to the Assistant Commissioner for
Trademarks have special legal requirements that must be satisfied as
part of the PTO's goal to make effective use of the Internet and
electronic commerce.
Purpose
To establish a policy for use of the Internet by organizations
reporting to the Assistant Commissioner for Trademarks, including: the
Office of the Assistant Commissioner for Trademarks, the Trademark
Examining Operation, Trademark Services, Trademark Program Control and
the Trademark Assistance Center;
To address use of the Internet to conduct interview-like
communications, and other forms of formal and informal communications;
To publish guidelines for locating, retrieving, citing, and
properly documenting scientific, commercial and technical information
sources on the Internet;
To inform the public how the PTO intends to use the Internet; and
To establish a flexible Internet policy framework which can be
modified, enhanced, and corrected as the PTO, the public, and customers
learn to use, and subsequently integrate, new and emerging Internet
technology into existing business infrastructures and everyday
activities to improve the trademark application, examination, and
registration business processes.
Article 1. Applicability
This policy applies to members of Trademark Organization reporting
to the Assistant Commissioner for Trademarks within the PTO, including
contractors and consultants working with, or conducting activities in
support of, the Trademark Organization. It does not
[[Page 33062]]
apply to members of the Trademark Trial and Appeal Board or contractors
and consultants working with, or conducting activities in support of,
the Trademark Trial and Appeal Board.
Article 2. Scope
This policy applies to activities associated with, or directly
related to, use of the Internet via PTO-provided network connections,
facilities, and services. This includes, but is not limited to, PTONet
connections, Office of Chief Information Officer (OCIO)-provided PCs
and workstations, and Internet provider services. This policy also
applies to use of other non-PTO Internet access facilities and
equipment that are used to conduct non-trademark application specific
work.
Article 3. Conformance With Existing, PTO-Wide, Internet Use Policy
This Internet Usage Policy supersedes the Interim Internet Usage
Policy published in the Official Gazette in February 1997. The policy
outlined in this document augments the existing PTO Internet Acceptable
Use Policy as set forth in the Office Automation Services Guide. As
such, this policy is an extension of current PTO office-wide Internet
policy.
Article 4. Correspondence Acceptable via the Internet
Internet e-mail may be used to reply or respond to an examining
attorney's Office Action, to reply or respond to a petitions attorney's
30-day letter, to reply or respond to a Post Registration Office
Action, as well as to conduct informal communications regarding a
particular application or registration with the appropriate Trademark
Organization employee. If e-mail communication is initiated by the
applicant or applicant's attorney, Office Actions, Priority Actions,
Examiner's Amendments, petitions attorney's 30-day letters, and Post
Registration Office Actions may be sent to the applicant via Internet
e-mail or by telephone, fax, or other appropriate means. Readable
attachments to Internet e-mail for such purposes as the submission of
evidence, specimens, affidavits and declarations will be accepted.
Article 5. Communications Not Acceptable via the Internet
Internet e-mail or other Internet communications may NOT be used to
file Trademark Applications, Amendments to Allege Use, Statements of
Use, Requests for Extension of Time to File a Statement of Use, Section
8 affidavits, Section 9 affidavits, or Section 15 affidavits until such
time as the PTO publishes electronic forms for these filings and they
are made available on the Internet by the PTO. Internet e-mail may be
used to submit specimens of use, but the Office will determine
acceptability of the specimen(s) and if the specimens are found not to
meet the standards for specimens of use, additional specimens will be
required. Certified copies of foreign certificates will NOT be accepted
via Internet e-mail. Internet e-mail may NOT be used for any
correspondence with the Trademark Trial and Appeal Board.
Article 6. Initiating Internet Communications
Internet communications will NOT be initiated by the Trademark
Organization unless it is authorized to do so by the applicant or by
the applicant's attorney. Authorization for members of the Trademark
Organization to communicate with applicant or applicant's attorney via
Internet e-mail may be given by so indicating in the application
submitted to the PTO or in any official written communication with the
Trademark Organization. The authorization must include the Internet e-
mail address to which all Internet e-mail is to be sent. Internet
communications may also be initiated and authorized by applicant or
applicant's attorney by telephone or by responding to an Office Action
or other official communication via an Internet e-mail address
indicated on the official correspondence.
Article 7. Waivers and Authentication
Applicants and their attorneys understand that the
misrepresentation of a sender's identity is a known risk when using
electronic communications. Therefore, Trademark Organization users have
an obligation to be aware of this risk and conduct their Internet
activities in compliance with established procedures.
Internet e-mail must be initiated and authorized by a practitioner,
or the applicant in a pro se application. Sufficient information must
be provided to show representative capacity in compliance with 37 CFR
2.17 and 10.14. In trademark cases, examples of such information would
include signing a paper in practice before the PTO in a trademark case,
attorney docket number, and trademark application serial number or
registration number.
The Assistant Commissioner for Trademarks will waive 37 CFR 10.18
to the extent that it requires an original signature personally signed
by a trademark practitioner in permanent ink on any correspondence
filed with the PTO. Receipt of an Internet e-mail communication by the
Trademark Organization from the address of applicant or applicant's
attorney containing the /s/ notation in lieu of signature and which
references a Trademark application serial number will be understood to
constitute a certificate that:
1. The correspondence has been read by the applicant or
practitioner;
2. The filing of the correspondence is authorized;
3. To the best of the applicant's or practitioner's knowledge,
information, and belief, there is good ground to support the
correspondence, including any allegations of improper conduct contained
or alleged therein; and
4. The correspondence is not interposed for delay.
Applicants requesting to correspond with the Trademark Organization
via the Internet should recognize that Internet communications might
not be secure, and should understand that a copy of any and all
communications received via the Internet will be placed in the file
wrapper and become a permanent part of the record.
Article 8. Office Procedures
When authorized to do so, the Trademark Organization will send
Office Actions and other official correspondence to the Internet e-mail
address indicated by the applicant or applicant's attorney. A signed,
paper copy of the outgoing correspondence will be associated with the
trademark application file wrapper.
When communications are received by an examining attorney, or other
appropriate Trademark Organization employee, the attorney or employee
will immediately reply to the communication acknowledging receipt of
the communication. The date the communication was received by the
Trademark Organization that appears in the heading of the communication
will constitute the receipt date within the PTO for purposes of time-
sensitive communications unless that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which case the
receipt date will be the next succeeding day which is not a Saturday,
Sunday, or Federal holiday within the District of Columbia. A paper
copy of all Internet e-mail communications, including a copy of any and
all attachments, will be associated with the trademark application file
wrapper. A paper copy of any informal communications regarding a
particular trademark application or registration will be associated
with the file wrapper and become a part of the record.
[[Page 33063]]
Article 9. Remedies
When an application is held abandoned because a timely Internet e-
mail communication was sent to and received by the Trademark
Organization but was not timely associated with the application file
wrapper, the abandoned application may be reinstated by the Trademark
Organization. There is no fee for a request to reinstate such an
application.
When an application is held abandoned because a timely Internet e-
mail communication was sent to, but apparently not received by the
Trademark Organization, applicant or applicant's attorney may petition
the Commissioner to revive the abandoned application pursuant to 37 CFR
2.66 and TMEP Secs. 1112.05(a), (b). In determining whether or not an
Internet response was timely filed, the Commissioner may accept a copy
of a signed certificate of transmission meeting the requirements of 37
CFR 1.8, a copy of the previously transmitted correspondence, and a
statement attesting to the personal knowledge of timely transmission of
the response. 37 CFR 1.8(b)(1), (2), and (3).
In all situations, the applicant or the applicant's attorney should
promptly notify the Office after becoming aware that the application
was abandoned because a communication was not timely associated with
the file wrapper or was not received by the Office.
Article 10. Use of Electronic Mail Services
Once e-mail correspondence has been received from an applicant, as
set forth in Trademark Article 6, such correspondence must be responded
to appropriately. The Trademark Organization employee may respond to an
applicant's Internet e-mail correspondence by telephone, fax, or other
appropriate means.
Article 11. Interviews
Internet e-mail may be used to conduct an exchange of
communications similar to those exchanged during telephone or personal
interviews. In such cases, a paper copy of the Internet e-mail contents
MUST be made and placed in the trademark application file wrapper.
Article 12. Documenting Search Strategies
All Trademark Organization users of the Internet for trademark
application research shall document their search strategies in
accordance with established practices and procedures as set forth in
TMEP Sec. 1106.07(a).
Subparagraph A
Any information, which would aid a future searcher in locating the
document retrieved through Internet research, should be included in the
citation. Guidelines for citing electronic information can be found as
an attachment to this policy.
Subparagraph B
When a document found on the Internet is not the original
publication, then the Trademark Examining Attorney or Trademark Library
staff shall pursue the acquisition of a copy of the originally
published document or an original of the document or Web object in
question for all references cited. Note: scanned images are considered
to be a copy of the original publication. Electronic-only documents are
original publications.
Article 13. Professional Development
The Internet is recognized as a tool for professional development.
It may be useful for keeping informed of technological and legal
developments. For example, use of the Internet for keeping abreast of
conferences, seminars, and for receiving mail from appropriate list
servers is acceptable. This is consistent with the Department of
Commerce's Internet Usage Policy.
Article 14. Policy Guidance and Clarifications
Within the Trademark Organization, any questions regarding the
Internet usage policy should be directed to the user's immediate
supervisor. Non-PTO personnel should direct their questions to the
Office of the Assistant Commissioner for Trademarks.
Attachment
Guidelines for Citing Electronic Resources
The Standing Committee on Information Technologies (SCIT) of the
World Intellectual Property Organization (WIPO) has revised WIPO
Standard ST.14 ``Recommendation for the Inclusion of References Cited
in Patent Documents'' to provide a standardized method for listing
references cited in patent documents. Standard ST.14 is reproduced in
its entirety below. Standard ST.14 became effective April 1, 1999, and
will be included in future updates of the WIPO Handbook on Industrial
Property Information and Documentation. Paragraph 13 of Standard ST.14
sets forth the method for citing electronic resources. The standard set
forth in paragraph 13 of ST.14 was modeled after the guidelines
provided by the International Organization for Standardization's
established Standard ISO 690-2 ``Information and documentation--
Bibliographic references--Part 2: Electronic documents or parts
thereof.''
Standard St.14--Recommendation for the Inclusion of References
Cited in Patent Documents
Editorial Note Prepared by the International Bureau
Articles published in scientific and technical journals often
contain a certain number of references to earlier publications. Patent
applications also very often contain (e.g., in the descriptions of the
inventions) references to earlier patents or patent applications. In
the course of the procedure for obtaining a patent, patent examiners
cite one or several patent documents or other documents which describe
similar or closely related technical solutions to the one described in
a patent application being examined, in order to illustrate the prior
art.
Some industrial property offices, but not all of them, bring these
cited references to the attention of the general public, by including
them in a published patent document. The present Recommendation is
intended to generalize the use of printing on the patent document the
``reference cited'' during the patent examination procedure, to
standardize the way in which the said references should be presented in
the patent document and to recommend a preferred place, where the
``references cited'' should appear in a patent document.
Revision Adopted by the SCIT Plenary at its Second Session on February
12, 1999
Definitions
1. For the purposes of this Recommendation, the term ``patents''
includes such industrial property rights as patents for inventions,
plant patents, design patents, inventors' certificates, utility
certificates, utility models, patents of addition, inventors'
certificates of addition, and utility certificates of addition.
2. For the purposes of this Recommendation, the expressions
``patent applications'' or ``applications for patents'' include
applications for patents for inventions, plant patents, design patents,
inventors' certificates, utility certificates, utility models, patents
of addition, inventors' certificates of addition, and utility
certificates of addition.
3. For the purposes of this Recommendation, the expression
[[Page 33064]]
``patent documents'' includes patents for inventions, plant patents,
design patents, inventors' certificates, utility certificates, utility
models, patents of addition, inventors' certificates of addition,
utility certificates of addition, and published applications therefor.
Background
4. Applications for patents are examined by a governmental
authority or intergovernmental authority which, as a rule, is an
industrial property office. A patent for invention is granted if the
application complies with the formal requirements and, depending on
whether and to what extent an ``examination as to substance'' is
carried out, if the invention fulfills the substantive requirements of
the respective patent law.
5. When patent applications are examined or search reports are
established therefor, a certain number of patent documents and other
documents might be cited as references to illustrate the prior art by
the industrial property office (including a regional Office, and an
International Searching Authority under the PCT).
References
6. References to the following Standards are of relevance to this
Recommendation:
WIPO Standard ST.2 Standard Manner for Designating Calendar Dates by
Using the Gregorian Calendar;
WIPO Standard ST.3 Recommended Standard on Two-Letter Codes for the
Representation of States, Other Entities and Intergovernmental
Organizations;
WIPO Standard ST.9 Recommendation Concerning Bibliographic Data on and
Relating to Patents and SPCs;
WIPO Standard ST.16 Recommended Standard Code for the Identification
of Different Kinds of Patent Documents;
International Standard ISO 4:1997 ``Information and Documentation--
Rules for the abbreviation of title words and titles of publications'';
International Standard ISO 690:1987 ``Documentation--Bibliographic
references--Content, form and structure'';
International Standard ISO 690-2:1997 ``Information and
documentation--Bibliographic references--Part 2: Electronic documents
or parts thereof.''
Recommendation
7. It is recommended that industrial property offices should
include in their granted patents and in their published patent
applications all relevant references cited in the course of a search or
examination procedure.
8. It is recommended that the ``List of references cited'' be
identified by INID code (56).
9. It is recommended that the ``List of references cited'' appear
either
(a) On the first page of the patent document or
(b) In a search report attached to the patent document.
10. It is recommended that if the ``List of references cited''
appears in a search report attached to the patent document, (e.g.,
under the PCT procedure) this should be indicated on the first page of
the patent document.
11. It is recommended that the documents in the ``List of
references cited'' be organized in a sequence suitable to the users''
needs, this sequence being clearly illustrated in the presentation of
the said list. The following is an example of a sequence of documents
cited:
(a) Domestic patent documents;
(b) Foreign patent documents;
(c) Non-patent literature.
In search reports, however, the documents may be cited in the order
of their pertinence.
12. Identification of any document cited, and available in paper
form or in a page-oriented presentation mode (e.g., facsimile,
microform, etc.) shall be made by indicating the following elements in
the order in which they are listed:
(a) In the case of a patent document:
(i) The industrial property office that issued the document, by the
two-letter code (WIPO Standard ST.3);
(ii) The number of the document as given to it by the industrial
property office that issued it (for Japanese patent documents, the
indication of the year of the reign of the Emperor must precede the
serial number of the patent document);
(iii) The kind of document, by the appropriate symbols as indicated
on the document under WIPO Standard ST.16 or, if not indicated on that
document, as provided in that Standard, if possible;
(iv) The name of the patentee or applicant (in capital letters and,
where appropriate, abbreviated); \1\ \3\
(v) The date of publication of the cited patent document (using
four digits for a year designation according to the Gregorian Calendar)
or, in case of a corrected patent document, the date of issuance of the
corrected patent document as referred to under INID code (48) of WIPO
Standard ST.9 and, if provided on the document, the supplementary
correction code as referred to under INID code (15); \2\
(vi) Where applicable, the pages, columns, lines or paragraph
numbers where the relevant passages appear, or the relevant figures of
the drawings.\1\
The following examples illustrate the citation of a patent document
according to paragraph (a), above:
Example 1: JP 10-105775 A (NCR INTERNATIONAL INC.) 24 April
1998, paragraphs [0026] to [0030].
Example 2: DE 3744403 A1 (JOSEK, A.) 1991.08.29, page 1,
abstract.
Example 3: SE 504901 C2 (SWEP INTERNATIONAL AB) 1997-05-26,
claim 1.
Example 4: US 5635683 A (MCDERMOTT, R. M. et al.) June 3, 1997,
column 7, lines 21 to 40.
(b) In the case of a monograph or parts thereof, e.g.,
contributions to conference proceedings, etc.:
(i) The name of the author (in capital letters);\3\ in the case of
a contribution, the name of the author of the contribution;
(ii) In the case of a contribution, the title of the contribution
followed by ``In:'';
(iii) The title of the monograph; in the case of a contribution,
the designation of the editorship;
(iv) The number of the edition;
(v) The place of publication and the name of the publisher (where
only the location of the publisher appears on the monograph, then that
location shall be indicated as the place of publication; in the case of
company publications, the name and postal address of the company);\1\
(vi) The year of publication, by four digits; \4\
(vii) Where applicable, the standard identifier and number assigned
to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be
noted that these numbers may differ for the same title in the print and
electronic versions;
(viii) The location within the monograph by indicating the pages,
columns, lines or paragraph numbers where the relevant passages appear,
or the relevant figures of the drawings (where applicable).\1\
The following examples illustrate the citation of a monograph
(Example 1), as well as of published conference proceedings (Example
2), according to paragraph (b), above:
Example 1: WALTON, Herrmann. Microwave Quantum Theory. London:
Sweet and Maxwell, 1973, Vol.2, ISBN 5-1234-5678-9, pages 138 to
192, especially pages 146 to 148.
Example 2: SMITH et al. 'Digital demodulator for electrical
impedance imaging.' In: IEEE Engineering in Medicine & Biology
Society, 11th Annual Conference. Edited by Y. Kim et al. New York:
IEEE, 1989, Vol.6, p. 1744-5.
(c) In the case of an article published in a periodical or other
serial publication:
[[Page 33065]]
(i) The name of the author (in capital letters); \3\
(ii) The title of the article (where appropriate, abbreviated or
truncated) in the periodical or other serial publication;
(iii) The title of the periodical or other serial publication
(abbreviations conforming to generally recognized international
practice may be used, see Appendix 1 to this Standard);
(iv) The location within the periodical or other serial publication
by indicating date of issue by four digits for the year designation,
issue designation, pagination of the article (where year, month and day
are available, the provisions of WIPO Standard ST.2 should be applied);
(v) Where applicable, the standard identifier and number assigned
to the item, e.g., ISBN 2-7654-0537-9, ISSN 1045-1064. It should be
noted that these numbers may differ for the same title in the print and
electronic versions;
(vi) Where applicable, the relevant passages of the article and/or
the relevant figures of the drawings.\1\
The following example illustrates the citation of an article
published in a periodical or other serial publication according to
paragraph (c), above:
Example: DROP, J.G. Integrated Circuit Personalization at the
Module Level. IBM tech. dis. bull. October 1974, Vol.17, No.5, pages
1344 and 1345, ISSN 2345-6789.
(d) In the case of an abstract not published together with the full
text document which serves as its basis:
The identification of the document containing the abstract, the
abstract and the full text document shall be made on the basis of the
bibliographic data available in respect thereof.
The following examples illustrate the citation of an abstract
according to paragraph (d), above:
Example 1: Shetulov, D.I. Surface Effects During Metal Fatigue.
Fiz.-Him. Meh. Mater. 1971, 7(29), 7-11 (Russ.). Columbus, OH, USA:
Chemical abstracts, Vol. 75, No. 20, 15 November 1971, page 163,
column 1, the abstract No. 120718k.
Example 2: JP 3-002404 A (FUDO). Patent abstracts of Japan, Vol.
15, No. 105 (M-1092), 1991.03.13 (abstract).
Example 3: SU 1374109 A (KARELIN, V. I.) 1988.02.15. (abstract),
Soviet Patent Abstracts, Section E1, Week 8836, London: Derwent
Publications Ltd., Class S, AN 88-255351.
13. Identification of an electronic document, e. g., retrieved from
a CD-ROM, the Internet or from an online database accessible outside
the Internet, shall be made in the manner indicated in subparagraphs
12(a), (b), (c), and (d), above, as far as possible and completed, as
suggested in the items below.
Attention is drawn to the following items which are modeled after
guidelines provided by the International Organization for
Standardization's established Standard ISO 690-2 ``Information and
documentation--Bibliographic references--Part 2: Electronic documents
or parts thereof.'' These items should be provided in the locations
indicated:
(i) Type of medium in square brackets [ ] after the title of the
publication or the designation of the host document, e.g., [online]
[CD-ROM] [disk]. If desired, the type of publication (e.g. monograph,
serial, database, electronic mail) may also be specified in the type of
medium designator;
(ii) Date when the document was retrieved from the electronic media
in square brackets, following the date of publication [retrieved on
1998-03-04];
(iii) Identification of the source of the document using the words
``Retrieved from'' and its address where applicable; this item will
precede the citation of the relevant passages;
(iv) Specific passages of the text could be indicated if the format
of the document includes pagination or an equivalent internal
referencing system, or by their first and last words.
Office copies of an electronic document should be retained if the
same document may not be available for retrieval in the future. This is
especially important for sources such as the Internet and online
databases.
If an electronic document is also available in paper form or in a
page-oriented presentation mode (see paragraph 12, above) it does not
need to be identified as an electronic document, unless it is
considered desirable or useful to do so.
The following examples illustrate citations of electronic
documents:
Examples 1-4: Documents retrieved from online databases outside
the Internet
Example 1: SU 1511467 A (BRYAN MECH) 1989-09-30 (abstract) World
Patents Index [online]. London, U.K.: Derwent Publications, Ltd.
[retrieved on 1998-02-24]. Retrieved from: Questel/Orbit, Paris,
France. DW9016, Accession No. 90-121923.
Example 2: Dong, X. R. `Analysis of patients of multiple
injuries with AIS-ISS and its clinical significance in the
evaluation of the emergency managements', Chung Hua Wai Ko Tsa Chih,
May 1993, Vol. 31, No. 5, pages 301-302. (abstract) Medline
[online]. Bethesda, MD, USA: United States National Library of
Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog
Information Services, Palo Alto, CA, USA. Medline Accession no.
94155687, Dialog Accession No. 07736604.
Example 3: Jensen, B. P. `Multilayer printed circuits:
production and application II'. Electronik, June-July 1976, No. 6-7,
pages 8, 10, 12, 14, 16. (abstract) INSPEC [online]. London, U.K.:
Institute of Electrical Engineers [retrieved on 1998-02-24].
Retrieved from: STN International, Columbus, Ohio, USA. Accession
No. 76:956632.
Example 4: JP 3002404 (TAMURA TORU) 1991-03-13 (abstract).
[online] [retrieved on 1998-09-02]. Retrieved from: EPO PAJ
Database.
Examples 5-11: Documents retrieved from the Internet
Example 5: (Entire Work--Book or Report) Wallace, S., and
Bagherzadeh, N. Multiple Branch and Block Prediction. Third
International Symposium on High-Performance Computer Architecture
[online], February 1997 [retrieved on 1998-05-20]. Retrieved from
the Internet:http://www.eng.uci.edu/comp.arch/papers-wallace/
hpca3-block.ps>.
Example 6: (Part of Work--chapter or equivalent designation)
National Research Council, Board on Agriculture, Committee on Animal
Nutrition, Subcommittee on Beef Cattle Nutrition. Nutrient
Requirements of Beef Cattle [online]. 7th revised edition.
Washington, DC: National Academy Press, 1996 [retrieved on 1998-06-
10]. Retrieved from the Internet: http://www2.nap.edu/htbin/
docpage/title= Nutrient+Requirements+of+Beef+Cattle%3
A+Seventh+Revised+Edition %2C+1996&dload=0&path= /ext5/
extra&name=054265%2 Erdo&docid= 00805F50FEb%3A840052612&colid=
4%7C6%7C41&start=38> Chapter 3, page 24, table 3-1.
Example 7: (Electronic Serial--articles or other contributions)
Ajtai. Generating Hard Instances of Lattice Problems. Electronic
Colloquium on Computational Complexity, Report TR96-007 [online],
[retrieved on 1996-01-30]. Retrieved from the Internet ftp://
ftp.eccc.uni-trier.de/pub/eccc/reports/1996/TR96-007/index.html>.
Example 8: (Electronic bulletin boards, message systems, and
discussion lists--Entire System) BIOMET-L (A forum for the Bureau of
Biometrics of New York) [online]. Albany (NY): Bureau of Biometrics,
New York State Health Department, July, 1990 [retrieved 1998-02-24].
Retrieved from the Internet: <[email protected]>, message:
subscribe BIOMET-L your real name.
Example 9: (Electronic bulletin boards, message systems, and
discussion lists--Contributions) PARKER, Elliott. `Re: citing
electronic journals'. In PACS-L (Public Access Computer Systems
Forum) [online]. Houston (TX): University of Houston Libraries,
November 24, 1989; 13:29:35 CST [retrieved on 1998-02-24]-Retrieved
from the Internet: //[email protected]>.
Example 10: (Electronic mail) `Plumb design of a visual
thesaurus'. The Scout Report [online]. 1998, vol. 5 no. 3 [retrieved
on 1998 05 18]. Retrieved from Internet electronic mail:
<[email protected]>, subscribe message: info scout-report. ISSN:
1092-3861.
Example 11: (Product Manual/Catalogue or other information
obtained from a Web-site) Corebuilder 3500 Layer 3 High-function
Switch. Datasheet [online]. 3Com Corporation, 1997 [retrieved on
1998-02-24].
[[Page 33066]]
Retrieved from the Internet: www.3com.com/products/dsheets/
400347.html>.
Examples 12 and 13: Documents retrieved from CD-ROM products
Example 12: JP 0800085 A (TORAY IND INC), (abstract), 1996-05-
31. In: Patent Abstracts of Japan [CD-ROM].
Example 13: Hayashida, O. et al.: Specific molecular recognition
by chiral cage-type cyclophanes having leucine, valine, and alanine
residues. In: Tetrahedron 1955, Vol. 51 (31), p. 8423-36. In: CA on
CD [CD-ROM]. Columbus, OH: CAS. Abstract 124:9350.
14. It is recommended that any document (reference) referred to in
paragraph 7 above, and cited in the search report should be indicated
by the following letters or a sign to be placed next to the citation of
the said document (reference):
(a) Categories indicating cited documents (references) of
particular relevance:
Category ``X'': The claimed invention cannot be considered novel or
cannot be considered to involve an inventive step when the document is
taken alone; Category ``Y'': The claimed invention cannot be considered
to involve an inventive step when the document is combined with one or
more other such documents, such combination being obvious to a person
skilled in the art.
(b) Categories indicating cited documents (references) of other
relevant prior art:
Category ``A'': Document defining the general state of the art
which is not considered to be of particular relevance;
Category ``D'': Document cited by the applicant in the application
and which document (reference) was referred to in the course of the
search procedure. Code ``D'' should always be accompanied by one of the
categories indicating the relevance of the cited document;
Category ``E'': Earlier patent document as defined in Rule 33.1(c)
of the Regulations under the PCT, but published on or after the
international filing date;
Category ``L'': Document which may throw doubts on priority
claim(s) or which is cited to establish the publication date of another
citation or other special reason (the reason for citing the document
shall be given);
Category ``O'': Document referring to an oral disclosure, use,
exhibition or other means;
Category ``P'': Document published prior to the filing date (in the
case of the PCT, the international filing date) but later than the
priority date claimed in the application. Code ``P'' should always be
accompanied by one of the categories ``X,'' ``Y'' or ``A;''
Category ``T'': Later document published after the filing date (in
the case of the PCT, the international filing date) or priority date
and not in conflict with the application but cited to understand the
principle or theory underlying the invention;
Category ``&'': Document being a member of the same patent family
or document whose contents have not been verified by the search
examiner but are believed to be substantially identical to those of
another document which the search examiner has inspected.
15. The list of cited documents (references) given in the search
report should indicate, conforming to the generally recognized practice
of the International Searching Authorities under the Patent Cooperation
Treaty, the respective claim(s) of the patent application to which the
citation is considered to be relevant.
16. The category codes referred to in paragraph 14, above, are
intended primarily for use in the context of search reports
accompanying published patent applications. However, if industrial
property offices wish to indicate the relevance of cited documents
(references) listed on the first page of a published patent
application, they should print the category codes in parentheses,
immediately after each citation.
Note: Further detailed information on definitions of terms used
in this Standard or on the inclusion of references cited can be
found in International Standard ISO 690:1987, ``Documentation--
Bibliographic References--Content, Form and Structure.'' Guidance
for the abbreviation of titles of articles can be obtained through
International Standard ISO 4:1997, ``Information and Documentation--
Rules for the Abbreviation of Title Words and Titles of
Publications.''
Examiners are encouraged to speak to a PTO librarian or technical
information specialist when they find that crucial elements to the
citation are lacking in their records.
The information specialist will work with the examiner to verify
dates, authors, and other elements as needed.
Notes:
1. These elements are to be indicated only in a search report.
2. The elements of item (v), having relevance to a corrected
patent document, should be indicated together with the other data
referred to under subparagraph 12(a)(i) to (iii).
3. Where a surname can be identified, forenames or initials
should follow the surname. Such surnames and initials should be
given in capital letters.
4. When the year of publication coincides with the year of the
application or of the priority claim, the month and, if necessary,
the day of publication of a monograph or parts thereof should be
indicated in accordance with the provisions set out in WIPO Standard
ST.2.
Dated: June 14, 1999.
Q. Todd Dickinson,
Acting Assistant Secretary of Commerce and Acting Commissioner of
Patents and Trademarks.
[FR Doc. 99-15696 Filed 6-18-99; 8:45 am]
BILLING CODE 3510-16-P